A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.
Roche Diagnostics Corp., et al. v. Meso Scale Diagnostics, LLC, Nos. 2021-1609, -1633 (Fed. Cir. (D. Del.) Apr. 8, 2022). Opinion by Prost, joined by Taranto. Dissenting opinion by Newman.
Roche brought suit against Meso seeking a declaratory judgment that it does not infringe Meso’s rights arising from a joint venture license agreement. Meso counterclaimed for infringement of three patents. The parties tried the case to a jury. The jury found that Meso holds an exclusive license to the asserted patent claims, that Roche directly infringed one claim and induced infringement of three others, and that Roche’s infringement was willful. The jury awarded Meso $137,250,000 in damages.
The district court overturned the willfulness finding and entered a noninfringement judgment with respect to three additional patents on the ground that Meso waived compulsory infringement counterclaims as to those patents. Roche appealed, and Meso cross-appealed.
In a divided opinion, the Federal Circuit affirmed on direct infringement, reversed on induced infringement, vacated the damages award, and remanded for a new trial on damages. The court also vacated the district court’s judgment of noninfringement as to the three additional patents and remanded.
In the appeal, Roche challenged the scope of Meso’s license rights, the verdict of induced infringement, and the damages award. The Federal Circuit analyzed in detail the rights granted by the license agreement, upholding the finding that Meso had rights in the patent found to be directly infringed by Roche. More specifically, the Federal Circuit determined that Roche’s appellate argument to the contrary was “made in passing only in a footnote,” which “is not sufficient under [the Federal Circuit’s] precedents to preserve an argument for review.”
The majority did not decide the question of Meso’s rights in the two patents on which the jury found induced infringement by Roche. Instead, the Federal Circuit reversed the judgment on induced infringement for two reasons: lack of intent, and absence of an infringing act that could support liability during the damages period. Given that decision, the Federal Circuit vacated the damages award and remanded for a new trial on damages.
On cross-appeal, Meso challenged the district court’s application of the compulsory-counterclaim rule. The Federal Circuit agreed with Meso that “the best understanding of the compulsory-counterclaim rule is that it bars future claims but does not authorize rendering adverse judgment on such claims in the same action.”
Judge Newman dissented on the ground that Meso does not own or have exclusive rights to the patents. Instead, she explained, Roche had purchased the patents from another entity in 2007, and so “Roche cannot infringe these patents, directly or by inducement, for Roche has owned these patents since 2007.” Judge Newman explained that the ownership status was confirmed by a plain reading of the several agreements between the parties, was supported by witness testimony for both Meso and Roche, and aligned with a common understanding that Roche has owned the patents since 2007.
Littelfuse, Inc. v. Mersen USA EP Corp., No. 2021-2013 (Fed. Cir. (D. Mass.) Apr. 4, 2022). Opinion by Bryson, joined by Prost and Stoll.
Littelfuse sued Mersen for infringement of a patent directed to a “fuse end cap for providing an electrical connection between a fuse and an electrical conductor.” During claim construction, the district court ruled that the involved claims do not cover a single-piece apparatus, that is, an end-cap formed from a single piece of material. Instead, the claims cover only a multi-piece apparatus. Littelfuse conceded noninfringement under that interpretation and appealed.
The Federal Circuit vacated and remanded, disagreeing with the district court’s view that the claims cover only a multi-piece apparatus. The Federal Circuit stated that “the structure of the claims is enlightening.” In particular, certain dependent claims recite a single-piece apparatus, making it clear that the corresponding independent claims must be broad enough to cover a single-piece apparatus.
The Federal Circuit explained that “by definition, an independent claim is broader than a claim that depends from it, so if a dependent claim reads on a particular embodiment of the claimed invention, the corresponding independent claim must cover that embodiment as well.” “Otherwise, the dependent claims would have no scope and thus be meaningless.”
The court further ruled that the specification supported the construction. Although the specification directly referenced only a multi-piece apparatus, the court stated that claims ordinarily should not be limited to preferred embodiments or specific examples recited in the specification. And the court again emphasized that, here, Mersen’s contrary construction “would not merely render the dependent claims superfluous, but would mean that those claims would have no scope at all, a result that should be avoided when possible.”